The requirements of disclosure and support in Australian patent specifications post ‘Raising the Bar’

Published on 15 Feb, 2016

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) commenced on 15 April 2013, and with it came a raft of changes to Australian patent law. Some of the most significant changes were intended to set higher thresholds for the level of disclosure and support required in a patent specification.

In its first opposition decision on a patent application under these new provisions, the Australian Patent Office (APO) has now issued CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (the decision), in which the Commissioner’s Delegate determined that the Applicant’s claims satisfied the requirements of the novelty and inventive step, but failed to meet the new requirements for ‘disclosure’ and ‘support’. This article will discuss the reasons for the rejection under the grounds of disclosure and support, and the implications for patent applicants.

The law prior to, and post Raising the Bar

Prior to the RTB Act, Australian patent law required that a patent specification describe the invention fully and that the claims be fairly based on the matter described in the specification. If the specification enabled a person skilled in the art to produce something within each claim without new inventions or additions, or prolonged study of matters which initially presented difficulty, then the test for full description was met. Importantly, there was no requirement under Australian law that a claim had to be enabled over its full scope, nor for every possible application of the invention to work, nor to have been demonstrated to work. Even if multiple examples or embodiments of the invention were claimed, enabling only one was sufficient. The fair basis requirement was considered satisfied if the specification contained a ‘real and reasonably clear disclosure’ of what was claimed. The ‘Raising the Bar’ reforms, however, amended the Patents Act 1990 (Cth) to require that:

‘a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’ (s 40(2)(a)); and

the claim(s) must be ‘supported by the matter disclosed’ in the specification (s 40(3)).

As explained in the Explanatory Memorandum, this change is intended to align the disclosure requirement with that applying in other jurisdictions, such as the UK and Europe, with the effect that sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention. These amendments were intended to ensure that the person skilled in the art can extend the teaching of the specification to produce the invention across the full width of the claims, and that the scope of the claims is not broader than is justified by the extent of the description, drawings and contribution to the art.

Disclosure

A number of principles can be ascertained from the decision. The requirement of sufficiency of disclosure can be summarised simply by answering the question: Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill? In order to decide whether a specification provides a disclosure as required by s 40(2), it is necessary to:

construe the claims to determine the scope of invention as claimed,

construe the description to determine what it discloses to the person skilled in the art, and

decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims, given that a reasonable amount of trial and error is permissible.

Support

The requirement of support can be summarised as being that the scope of the claims should correspond to the technical contribution to the art. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. In particular, inventive concept is concerned with the identification of the core (or kernel, or essence) of the invention which entitles the inventor’s achievement to be called inventive. In contrast, the invention’s technical contribution to the art is concerned with the evaluation of its inventive concept, namely answering the question: how far forward has it carried the state of the art? It was held in the decision that the mere mention in the specification of features appearing in the claim will not necessarily be a sufficient support. The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed. The Commissioner’s Delegate noted that the task of the decision-maker is similar to, though subtly different from, that required to assess disclosure, namely to:

construe the claims to determine the scope of the invention as claimed,

construe the description to determine the technical contribution to the art, and

decide whether the claims are supported by the technical contribution to the art.

The claimed invention

The Applicant’s patent application concerns light weight and fire resistant gypsum panels composed of a gypsum core containing high expansion particles of a specified type (such as high expansion vermiculite) and two cover sheets. The panels were also required to have certain properties, as set out in claim 1. These properties included a defined core density, core hardness and core Thermal Insulation Index. Additionally, since claim 1 was directed to a “fire resistant” panel, it was considered that the requirement that the panel also meet certain standards for fire resistance should be imported into the claim. The specification provided example compositions of 20 different sample panels having high expansion vermiculite. The specification also provided fire resistance test results for each of these samples according to particular industry standards. However, some of these samples failed to pass any of these standards. Critically, since each claim is directed to a ‘fire resistant’ panel, the APO held that the person skilled in the art would understand that this means the panel must meet some recognised fire resistance standard. Therefore, the claims were construed to define gypsum panels having high expansion particles, and other defined properties, and fire resistance (i.e. that it meets a relevant industry standard).

Application of the facts to the case

In discussing the claimed invention, the Delegate noted that there were many process and starting material variables that will affect whether a panel has the claimed parameters. However, the specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full combination of properties, especially the fire resistance of the panel. The Delegate noted that where the work involved in adjusting the composition of the panels amounts to reasonable trial and error, then the specification provides an adequate disclosure. However, if the work involved amounts to an undue burden, then the specification has not provided an adequate disclosure. The Delegate held that the evidence relating to fire testing of gypsum panels was that such testing would be an ‘undue burden’, at least in the respect of cost (evidence showed that it was prohibitively expensive, in excess of USD50,000 or more), and the work involved in adjusting the composition of the panels to meet the parameters did not amount to ‘reasonable trial and error’. Accordingly, the Delegate concluded that the specification failed to meet the disclosure requirements of s 40(2)(a). Regarding support, the Applicant submitted that the contribution to the art could be found in the use of high expansion particulates to produce a low density, fire resistant gypsum panels. The Delegate agreed that while it was readily apparent that the specification discloses the use of such particulates, it is apparent that the use of these particulates does not guarantee that the low density gypsum panel will be fire resistant. Rather, high expansion particulates will sometimes lead to a fire resistant panel, and sometimes will not. Based on what is disclosed in the specification, the Delegate concluded that it is unpredictable whether a panel containing high expansion particulates will be fire resistant, and therefore the art has been advanced only to the extent that it is now known that high expansion particulates CAN produce a low density, fire resistant gypsum panel in some instances. However, the applicant cannot demonstrate a general principle by which the result of a low density, fire resistant gypsum panel will be achieved. Accordingly, the Delegate found that the scope of the claims exceeded the actual contribution made to the art, and the support requirement of s 40(3) was not satisfied.

Conclusion

It is likely that the decision in this case would have been different had the patent application been assessed according to the pre-RTB disclosure and fair basis requirements. It is clear therefore that the RTB reforms have significantly impacted the requirements relating to disclosure and support of patent specifications. In brief, for applications governed by the RTB Act:

In relation to disclosure, the teaching provided by the Applicant should enable the skilled person to perform the invention across the full scope of the claims without undue burden, and allowing for a reasonable amount of trial and error. Broad claims should therefore require a more comprehensive disclosure of how to work the invention in a wide range of embodiments.

In relation to support, if the inventor has merely developed one new and improved way to do something, then that may be as much as (s)he is entitled to claim. However, if an invention is based upon the discovery of a new and previously unknown general principle that can be applied, without further invention, to produce a range of improved results, then this may provide support for a correspondingly broad claim.

This is the first decision to consider the new disclosure and support requirements under the RTB Act. While these requirements have yet to be considered by Australian Courts, it is expected that the Courts will adopt a similar approach to the APO, and the principles set out in the decision will be applied by Australian Examiners going forward.